The Board affirmed a refusal to register the mark APPARATUS in the stylized from shown below, finding it merely descriptive of lamps and lighting fixtures, candles, electrical repair services, and lighting design services, and rejecting applicant’s claims of acquired distinctiveness. However, the Board reversed the USPTO’s genericness refusal. In re Apparatus LLC, Serial No. 86443209 (September 28, 2017) [not precedential] (Opinion by Judge Frances Wolfson).
Mere Descriptiveness: Dictionary definitions led the Board to conclude that the term “apparatus” refers to “an item or a collection of items forming a unified whole to accomplish a single purpose.”
The Board found APPARATUS to be merely descriptive of lamps and lighting stands because it describes the nature or function of the goods. Likewise as to candle holders, which are devices for a particular purpose: to hold candles! As to applicant’s services, a term that describes a product is considered merely descriptive of a service providing that product. [For a generic term, I can buy this. But for a descriptive term, not always. – ed.].
The stylization of the applied-for mark is so minimal that it does not create a separate and distinct commercial impression apart from the word APPARATUS.
Genericness: There was insufficient evidence to allow the Board to determine whether APPARATUS is commonly understood as the name of the class of goods or the class of services to which the identified goods and services belong. And so the Examining Attorney failed to meet the difficult burden of proving genericness.
Acquired Distinctiveness: To support its Section 2(f) claim, applicant pointed to its five-year declaration as well as to the results of a Google brand search purportedly showing that applicant is the only entity using the term APPARATUS as a source indicator for its goods and services.
The Google search results, however, were skeletal and failed to provide sufficient information to enable the Board to make any determination regarding distinctiveness. As to the declaration, because applicant’s mark is highly descriptive, a declaration alone is insufficient to establish acquired distinctiveness. And so the Board concluded that applicant failed to meet is burden to prove acquired distinctiveness.
Conclusion: The Board reversed the genericness refusal and affirmed the mere descriptiveness refusal.